Ex Parte Cohen et al

Patent Trial and Appeal Board

Mar 17, 2017

12592630 (P.T.A.B. Mar. 17, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/592,630 11/30/2009 Jacques Cohen H-1407B 3097
7590 03/17/2017
WTT T TAMW TONFS
EXAMINER
PATENT COUNSEL KUHLMAN, CATHERINE BURK
56 TERRACE HILL ROAD
GILFORD, NH 03249 ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
03/17/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACQUES COHEN, TIM SCHIMMEL,
and MICHAEL D. CECCHI
Appeal 2015-006586
Application 12/592,630
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
apparatus for micro manipulation of biological specimens. The Examiner
rejected the claims on the grounds of anticipation and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as LifeGlobal Group, LLC
(see Br. 1).
Appeal 2015-006586
Application 12/592,630
Statement of the Case
Background
Appellants’ invention relates to “oocyte, embryo and specimen
positioning apparatus and a method for inspection, observation, biopsy and
the micromanipulation of oocytes, embryos and cells without the use of a
second device, such as a holding pipette” (Spec. 1:6—8).
The Claims
Claims 2, 8, 10, 12—15, and 17 are on appeal. Independent claim 12 is
representative and reads as follows (emphasis added):
12. A dish for use in micro manipulation of embryos,
oocytes or other cell specimens, said dish comprising:
a) a well, and
b) a plurality of upwardly open horizontal lanes formed in
said well, said lanes each having a flat bottom wall onto which
one specimen settles by gravity; said lanes each including an
opening through which a micro tool can access a specimen; a
narrowest end of each of said lanes being sized to conform to
the size of a specific specimen whereby the specimen in
question is confined in place in said narrowest end of each
lane during micromanipulation of said specimen, said well
having a side wall which is taller than side walls of said lanes
whereby specimens in said lanes can be submerged by media
solutions disposed in said well.
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The Issues2
A. The Examiner rejected claims 12 and 15 under 35 U.S.C. § 102(a) as
being anticipated by Cecchi ’5633 (Final Act. 2—3).
B. The Examiner rejected claims 2, 8, 10, and 13 under 35 U.S.C.
§ 103(a) as being obvious over Cecchi ’563 and Cecchi ’4114 (Ans. 3—5).
C. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as being
obvious over Cecchi ’563 and Gordon5 (Ans. 5).
D. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as being
obvious over Cecchi ’563 and Foster6 (Ans. 5).
A. 35 U.S.C. § 102(a) over Cecchi ’563
The Examiner finds that Cecchi ’563 teaches
a dish for use in micro-manipulation of oocytes 23 comprising
a well 21 and a plurality of upwardly open horizontal lanes
17. The lanes have flat bottom walls on which one cell settles
by gravity and are formed in the bottom surface of the well
21 (fig. 2, [0001], and [0016]). The upper region of the lane
defines an opening through which a micro-tool can access the
specimen (fig. 2). A narrowest ends of the lanes (the bottom
ends) are sized to conform to the size of the oocyte (fig. 2) so
that the oocyte is confined in place during manipulation
2 We note Appellants’ contention that the claim objections “have been
addressed and dealt with,” and that “[t]hey should be withdrawn” (Br. 5).
However, claim objections are petitionable and therefore not before us on
appeal. See MPEP § 706.01 (the “Board will not hear or decide issues
pertaining to objections and formal matters which are not properly before the
Board.”)
3 Cecchi et al., US 2008/0248563 Al, published Oct. 9, 2008.
4 Cecchi, US 2010/0075411 Al, published Mar. 25, 2010.
5 Gordon, US 5,691,194, issued Nov. 25, 1997.
6 Foster et al., US 4,444,879, issued Apr. 24, 1984.
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Application 12/592,630
[0016]. The lanes are formed in the bottom surface of the dish
or well 21 [0001], therefore the walls of the dish are taller
than the walls of the lanes whereby specimens in the lanes can
be submerged by media solutions disposed in the well.
(Final Act. 2—3.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s finding that Cecchi ’563 anticipates claim 12?
Findings of Fact
1. Cecchi’563 teaches
A container or dish is useful for the micro manipulation,
micro injection, biopsy and fertilization in oocyte and embryo
manipulation and culturing. The dish allows the user to more
readily perform procedures used to fertilize oocytes by
Intracytoplasmic sperm injection (ICSI) or other procedures,
biopsy embryos and perform additional procedures for use in
assisted reproductive techniques (ART), human reproduction
and in-vitro fertilization (IVF). The invention allows ease in
use, the reduction in the number of micro tools used in the
procedure, as opposed to conventional dishes and procedures,
and will allow the user to more readily locate the oocytes and
embryos to be handled and worked on.
(Cecchi ’563 Abstract; see also Final Act. 2—3.)
2. Cecchi ’563 teaches that “[t]he dish includes multiple
depressions in its bottom surface which create a unique working
configuration” (Cecchi ’563 11; see also Final Act. 2—3).
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3. Figure 1 of Cecchi ’563 is reproduced below:
Figure 1 shows
a top plan view of a specimen handling dish . . . The dish 10
includes an outer wall 21 and a top surface 19. Within the
dish 10 are a plurality of wells 13. The wells 13 each have an
outer wall 14 and a declining bottom wall 11 with a recessed
basin 17 therein. Within each of the wells 14 there is a raised
post 15 which can be used to release the specimen from a
micro tool. The specimen will settle into and remain in the
basin 17.
(Cecchi ’563 1 15; see also Final Act. 2—3.)
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4. Figure 2 of Cecchi ’563 is reproduced below:
FIG. 2
Figure 2 shows
details of the interior of each of the wells 13. . . The bottom
wall 11 of each well 13 is formed with two separated
downwardly declining components 27 and 27’, one of which
is taller than the other. The post 15 is used to release the
specimen 23 from a micro tool 25, by drawing the specimen
23 against the post 15 to aid in its release from the micro tool
25. The released specimen 23 will then migrate into the
recessed basin 17 where it will remain.
(Cecchi ’563 1 16; see also Final Act. 2—3.)
5. The Specification teaches that “[t]he individual oocytes, cells,
or embryos (specimens) are kept separate from each other in open marked or
unmarked well compartments that are located in the culturing dish” (Spec.
2:35-36).
6. The Specification teaches that “[t]he apparatus ... is
surrounded by walls . . . creating a small well” (Id. at 5:38—39).
Principles of Law
“[C]laims in an application are to be given their broadest reasonable
interpretation consistent with the specification and that claim language
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Application 12/592,630
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983).
Analysis
Claim 12:
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2—6; Ans. 2^4; FF 1—10) and
agree that claim 12 is anticipated by Cecchi ’563. We address below
Appellants’ arguments.
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art. The limitation in
dispute is the requirement for “a well” as required by claim 12 (see Br. 5—6,
Ans. 2).
Appellants do not appear to provide a definition for this term in the
Specification, in the claims, nor in their arguments, other than describing in
the Specification that “[t]he individual oocytes, cells, or embryos
(specimens) are kept separate from each other in open marked or unmarked
well compartments that are located in the culturing dish” (FF 5), and that
“[t]he apparatus ... is surrounded by walls . . . creating a small well” (FF 6).
The Examiner contends that “[t]he terminology used to describe the
various elements of the prior art do not limit the prior art structure” (Ans. 2).
We conclude that the Examiner has the better position.
We conclude that the broadest reasonable interpretation of the term “a
well” in claim 12 is an area or compartment that is surrounded by at least a
wall.
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We next turn to Appellants’ arguments.
Appellants contend that
the Examiner states that Cecchi ’563 discloses a dish
comprising a well 21 having a plurality of horizontal lanes 17.
This is a clearly erroneous and misleading description of
Cecchi ’563. The wells in Cecchi ’563 are identified by the
numeral 13. The outer wall 21 is the outer wall of the dish
10. It is not the outer wall of a well 13.
(Br. 5-6.)
This argument is unpersuasive. As the Examiner explains,
“[although Cecchi ’563 refers to element 13 as a well, element 21 forms an
outer wall on the dish 10 and, thus, also defines a well [0015]” (Ans. 2; FF
2-4). In other words, because claim 12 does not differentiate one well from
another, and because we concluded that “a well” in claim 12 is an area or
compartment that is surrounded by at least a wall, we agree with the
Examiner that what is depicted generally as reference number 21 in Figures
1 and 2 of Cecchi ’563 is also a well (Ans. 2; FF 2-4).
Moreover, Cecchi ’563 teaches that “[t]he dish includes multiple
depressions in its bottom surface which create a unique working
configuration” (FF 2 (emphasis added); see also FF 3 (“The dish 10 includes
an outer wall 21”)). Thus, dish 10, i.e., a Petri dish, of Cecchi ’563
necessarily provides a well. We further observe that Appellants do not
appear to dispute that item 13 of Cecchi ’563 is also a well that has at least a
wall (see FF 3^4; Br. 6).
Appellants also argue that
[t]he Examiner goes on to speculate that well (dish) side wall
21 is likely taller than the lane 17 side walls in the dish 10 of
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Cecchi ’563 (Page 3, Office Action). Cecchi ’563 provides
no support whatsoever for this speculative interpretation of
the reference. The side walls 14 of the wells 13 are what must
be taller than the side walls of the lanes 17 of Cecchi ’563.
That said, why would “therefore” (to quote the Examiner) the
walls (wall) 21 of the dish 10 have to be taller than the lane
17 side walls??
(Br. 6.)
We are not persuaded. As the Examiner explains,
Cecchi ’563 discloses that multiple depressions forming the
unique working configuration (wells 13) are formed in the
bottom surface of the dish (element 10) [0001]; a wall 21
around a perimeter of the dish would be taller than the walls
of lane 17 within a depression or well 13 formed in the bottom
surface of the dish.
(Ans. 2; FF 2.) In other words, because Cecchi ’563’s wells 13 are within
the dish which has depressions in its bottom surface, the walls of the wells
13 would necessarily be lower that the wall of the dish (see also FF 4). We
also observe that as claim 12 does not differentiate wells and lanes that are
distinct and separate from one another, the walls next to recessed basin 17
and the wall 14 as depicted in Figure 2 of Cecchi ’563 would also meet this
claimed limitation (see FF 4).
Claim 15:
Claim 15 recites “projections adjacent to in side walls of said lanes,
said projections being sized to enable dislodgment of specimens from micro
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tools which are used in micromanipulation of specimens in said dish” (see
Appellants’ claim 15).7
Appellants contend that
this claim recites the inclusion of projection in side walls of
the lanes for enabling dislodgment of specimens from micro
tools that are used in micromanipulation of specimens in the
dish. The Examiner, in rejecting this claim refers to the posts
15 which are on the bottom walls 11 of the wells 13. These
posts 15 are used to release the specimens from a micro tool
before the specimens migrate into the basins 17. These posts
15 are spaced apart from the basins 17 and are not intended
for use in dislodging a specimen in the basins 17, they are
intended for use in dislodging a specimen out of the basins
17. If the posts 15 were placed in the side walls of the lanes
17, as claimed, they would block the basins 17 from specimen
migration.
(Br. 6.)
We are not persuaded. As the Examiner explains,
[cjlaim 15 (as submitted on September 2nd, 2014) recites
projections adjacent to side walls of the lanes. Cecchi ’563
discloses projections 15 adjacent or next to the side walls of
lanes 17 (figs. 1 and 2). Claim 15 as submitted with the
appeal brief recites “projections adjacent to in side walls of
said lanes” which is not consistent with the previously
examined language.
(Ans. 2—3.) In other words, as seen in Figure 2 of Cecchi ’563, the recessed
basin 17 clearly has side walls thereby forming the lanes, and the post 15 is
7 We note that from the Amendment dated Sept. 2, 2014, claim 15 recites
“projections adjacent to side walls of said lanes” instead of “projections
adjacent to in side walls of said lanes” (see Amendment dated Sept. 2, 2014
(emphasis added)).
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clearly positioned adjacent to their side walls (see FF 4). We, thus, agree
with the Examiner that Cecchi ’563 teaches the “projections adjacent to side
walls of said lanes” aspect of claim 15.
Further, “the patentability of apparatus or composition claims depends
on the claimed structure, not on the use or purpose of that structure.”
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002). “A patent applicant is free to recite features of an apparatus
either structurally or functionally .... Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). “‘Functional’ terminology may render a
claim quite broad. By its own literal terms a claim employing such language
covers any and all embodiments which perform the recited function.” In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971). Because Cecchi ’563 teaches
the projections in a “container or dish [that] is useful for the micro
manipulation” (FF 1; see also FF 4), we conclude that Cecchi ’563 teaches
projections that are capable of “enabling] dislodgment of specimens from
micro tools which are used in micromanipulation of specimens in said dish”
as claimed.
We further note that the claims do not require dislodging specimen in
the basin, or lanes, as Appellants contend, or any structures that differentiate
from those of Cecchi ’563. “[L]imitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993). See also In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[Ajppellanf s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”).
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B. 35 U.S.C. § 103(a) over Cecchi ’563 and Cecchi ’411
The Examiner finds that Cecchi ’563 teaches
an apparatus for micro-manipulation of oocyte specimens 23
comprising a container 21 with one or more specimen
capturing compartments 13 each containing a flat bottom lane
17 which gradually narrows from top to bottom (figs. 1 and
2). The lanes provide specimen positioning for micro­
manipulation without the need for a holding pipette
(specimen held in place by components 27 and 27’ [0016]),
specimen immobilized by the well [0017] therefore holding
pipette would not be necessary, holding pipette disclosed as
disadvantageous in [0003]).
(Final Act. 3—4.)
The Examiner acknowledges that “Cecchi ’563 is silent as to the lanes
having a sloping bottom wall with a lowest point at the narrowing area of the
lane” (id. at 4).
The Examiner finds that Cecchi ’411 teaches “a plurality of lanes 36
for oocyte specimens 44 in a dish 28 wherein the bottom-most portion of the
lane 40 slopes downward so that an oocyte will migrate gravitationally
toward a predetermined location at the lowest point in the lane [0022]” (id.).
The Examiner concludes that it would have been obvious to
configure the lanes of Cecchi ’563 with a sloping bottom wall
in order to further isolate the location of the oocytes within
the lanes, as taught by Cecchi ’411. Cecchi ’563 already
discloses the lanes get narrower toward the bottom wall (fig.
2) therefore the lowest point will be at the narrowing area of
the lanes (i.e. anywhere along the bottom surface of the
lanes).
(Id.)
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Cecchi ’563 and Cecchi ’411
would have rendered claim 2 obvious?
Findings of Fact
7. Cecchi’411 teaches
A container or dish used for the micro manipulation, micro
injection, biopsy and fertilization of oocyte and embryo
culture. The dish allows the user to more readily perform
procedures used to fertilize oocyte, such as intracytoplasmic
sperm injection (ICSI), biopsy embryos and perform
additional procedures in used in assisted reproductive
techniques (ART), human reproduction and in vitro
fertilization (IVF) techniques. The invention will allow ease
in use, the reduction in the number of micro tools used in the
procedure, as opposed to conventional dishes and
procedures, and will allow the user to more readily locate the
oocytes and embryos to be handled and worked on.
(Cecchi ’411 Abstract; see also Final Act. 4.)
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8. Figure 4 of Cecchi ’411 is reproduced below:
Figure 4 shows
[a] dish 28 [that] includes a floor 30, an outer wall 32, and an
inner wall 34. A plurality of wedge-shaped chambers 36 are
disposed inside of the inner wall 34. The chambers 36 include
downwardly and inwardly angled bottom walls 38 which
meet at a central mid line 40. The mid line 40 angles
downwardly toward the center 42 of the dish 28. When a
biological specimen 44, such as an oocyte, embryo, or the
like, is placed in any of the chambers 36, the specimen 44 will
gravitationally migrate to the lowest point 46 in the chambers
36, where they will be, in effect, wedged in place.
(Cecchi ’411122; see also Final Act. 4.)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Claim 2:
Claim 2 recites
An apparatus for micro manipulation of cell, oocyte or
embryo specimens, said apparatus comprising: a container for
positioning oocytes, cells or embryos, said container
comprising one or more specimen-capturing compartments,
wherein said specimen-capturing compartments contain one
or more flat bottom gradually narrowing lanes, wherein said
gradually narrowing lanes provide specimen positioning for
micro manipulation of specimens without the need for a
holding pipette during a micro manipulation operation, and
wherein said lanes have a sloping bottom wall with a lowest
point at a narrowing area of said lanes.
(See Appellants’ claim 2 (emphasis added).)
We agree with the Examiner that claim 2 would have been obvious
over Cecchi ’563 and Cecchi ’411. We address below Appellants’
arguments.
Appellants contend that
[t]he Cecchi ’411 lanes 36 do not have a flat bottom wall as
claimed. They have a linear bottom 40 formed by two
inwardly sloped bottom walls 38. Cecchi ’563 has inwardly
sloped side walls in its lanes 17, with a flat bottom wall (See
FIG. 2). If one were to modify Cecchi ’563 in accordance
with the teachings of Cecchi ’411, the result would be to form
the lanes of Cecchi ’563 with two inwardly sloped bottom
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walls and linear bottoms as taught by Cecchi ’411. Linear
bottoms are not what is claimed in instant Claim 2.
(Br. 7.)
We are not persuaded.
As an initial matter, we note that claim 2 recites “one or more flat
bottom gradually narrowing lanes” and “said lanes have a sloping bottom
wall with a lowest point at a narrowing area of said lanes” as opposed to “a
flat bottom wall” as Appellants contend. Other than these recitations in
claim 2, the Specification and the claims do not appear to define “flat
bottom,” “flat bottom wall,” or “sloping bottom wall.” Claim 2 also does
not recite any point of reference concerning the direction and orientation of
different surfaces other than these recitations. “[DJuring patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.” In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). Moreover, during prosecution, we give
claim terms the broadest reasonable interpretation as understood by a person
of ordinary skill in the art in light of the specification. In re Morris, 111
F.3d at 1054 (Fed. Cir. 1997); In re Am. Acad. OfSci. Tech. Ctr., 367
F.1359, 1364 (Fed. Cir. 2004) (“Construing claims broadly during
prosecution is not unfair to the applicant. . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.”)
We, thus, agree with the Examiner that “Cecchi ’563 teaches a lane
with a flat bottom wall as claimed. Cecchi ’411 teaches the bottom of a lane
(midline 40) can be angled downwardly such that a specimen will migrate to
the lowest point in a lane or chamber and wedge in place [0022]” (Ans. 3;
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FF 3—4, 8). In other words, because Cecchi ’563 clearly teaches a surface
that is flat and at the bottom of recessed basin 17 (FF 4), Cecchi ’563
suggests the “flat bottom” limitation of claim 2. Because Cecchi ’411
clearly teaches “downwardly and inwardly angled bottom walls 38” (FF 8),
Cecchi ’411 teaches the “sloping bottom wall” limitation of claim 2. We,
thus, agree with the Examiner that Cecchi ’563 teaches “one or more flat
bottom gradually narrowing lanes,” and that Cecchi ’411 teaches “said lanes
have a sloping bottom wall with a lowest point at a narrowing area of said
lanes” as claimed, and that the combination would have been obvious “so
that the oocyte gravitationally migrates to a specific point in the lane” (Ans.
3).
We recognize, but are not persuaded by, Appellants’ contention that
[t]his is a classic case of selective modification of one
reference by using only a part of a second reference. This has
been described as “pick and choose”. The Examiner’s
rejection would choose the downwardly sloping nature of the
linear bottoms of Cecchi ’411, but would exclude the linear
nature of the Cecchi ’411 bottoms.
(Br. 7.)
As the Examiner explains, “[according to the teaching of Cecchi
’411, it would be obvious to modify the flat bottom wall taught by Cecchi
’563 to angle downwardly so that the oocyte gravitationally migrates to a
specific point in the lane” (Ans. 3; FF 7—8). We conclude that the
Examiner’s modification of Cecchi ’41 l’s bottom wall surface to be angled
is reasonable, based on the teachings of Cecchi ’563, in order to “allow the
user to more readily locate the oocytes and embryos to be handled and
worked on” (FF 7), and because “the specimen 44 will gravitationally
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migrate to the lowest point 46 in the chambers 36, where they will be, in
effect, wedged in place” (FF 8).
Claim 8:
Claim 8 recites “wherein said lanes include openings through which a
micro tool can access specimens disposed in said lanes” (see Appellants’
claim 8).
Appellants argue that “[t]his rejection is clearly erroneous since Claim
8 recites ‘said lanes’ thereby specifically incorporating the lane structure
recited in Claim 2 which the Examiner admits is not present in Cecchi ’563.
This being the case, Cecchi ’563 can[n]ot be said to render obvious the
subject matter of Claim 8” (Br. 7).
We are not persuaded. The Examiner acknowledges that “Cecchi
’563 is silent as to the lanes having a sloping bottom wall with a lowest
point at the narrowing area of the lane” (Final Act. 4), as opposed to Cecchi
’563 not teaching any lanes. We agree with the Examiner that Cecchi ’563
teaches that the “upper ends of lanes are open to a tool, fig. 2” (id.), and
therefore, teaches structures that reasonably satisfy the requirement for
“[said] lanes include openings through which a micro tool can access
specimens disposed in [said] lanes” as claimed.
Claim 10:
Appellants argue that “[c]laim 10 [] depends from both Claims 2 and
8, and therefore contains all of their limitations. Thus this rejection is also
clearly erroneous and should be reversed” (Br. 8).
Accordingly, we are not persuaded for the reasons discussed above.
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Claim 13:
Similar to claim 2, Appellants contend that
[t]his is a classic case of selective modification of one
reference by using only a part of a second reference. This has
been described as “pick and []choose”. The Examiner’s
rejection would choose the downwardly sloping nature of the
linear bottoms of Cecchi ’411, but would exclude the linear
nature of the Cecchi ’411 bottoms.
(Br. 8.)
We are not persuaded for the reasons discussed above.
C. 35 U.S.C. § 103(a) over Cecchi ’563 and Gordon
The Examiner acknowledges that “Cecchi ’563 is silent as to
indentations adjacent to open ends of each of the lanes” (Final Act. 5).
The Examiner finds that “Gordon discloses an indentation 31 adjacent
an open end of an oocyte chamber 4 (figs 2—3) for storage of materials such
as sperm (col. 4, lines 22—27)” (id.).
The Examiner concludes that it would have been obvious to “include
indentations adjacent to open ends of each of the lanes in the dish taught by
Cecchi ’563 in order to provide a holding area for materials such as sperm
adjacent an oocyte, as taught by Gordon” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Cecchi ’563 and Gordon would have
rendered claim 14 obvious?
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Findings of Fact
9. Gordon teaches “a method and apparatus for concentrating
motile sperm from a sperm sample, including concentrating sperm in the
vicinity of one or more oocytes for in vitro fertilization” (Gordon Abstract;
see also Final Act. 5).
10. Figure 3 of Gordon is reproduced below:
Figure 3 shows “a sectional side view of a culture dish” (Gordon 3:3),
having a “central depression 31” {id. at 4:18), “oocyte chambers 4,” and
“sperm sample 34” {id. at 4:22—23; see also Final Act. 5).
Analysis
Appellants contend that “[t]his combination of references does not
render obvious the subject matter of Claim 14 since the claim requires that
the lanes have an open end, which Cecchi does not, and Gordon does not
have lanes at all, it has wells 4” (Br. 8—9).
As discussed above, we are not persuaded that Cecchi ’563 does not
teach lanes having an open end. Further, the Examiner relies on Gordon for
teaching indentations instead of lanes {see Final Act. 4; Ans. 3^4; FF 9—10).
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references []. [The reference] must be read, not in isolation, but for what it
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fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We recognize, but are not persuaded by, Appellants’ contention that
the claim requires that the indentations be adjacent to the lane
open ends while the micro wells 4 in Gordon are positioned
in the middle of circles of micro wells 4 [sic] and not adjacent
to open ends of the micro wells 4. The micro wells 4 of
Gordon do not have associated indentations positioned
adjacent to open ends of each of the micro wells 4.
(Br. 9).
As Examiner explains,
Gordon discloses an indentation 31 adjacent the open end of
a microwell (the top of the microwell) (fig. 3). As stated
above, the microwell is not relied upon to demonstrate the
structure of the claimed lanes but rather as a single oocyte
positioning structure with an indentation for storage of
materials adjacent thereto. The top of the micro well is open,
as are the tops of the lanes taught by Cecchi ’563. Gordon
teaches an indentation 31 positioned adjacent this open end of
the microwell; in the combination, an indentation is
positioned adjacent the open end or top of the lane of Cecchi
’563.
(Ans. 4.)
D. 35 U.S.C. § 103(a) over Cecchi ’563 and Foster
As set forth above, we found no deficiency in the Examiner’s
rejection as it relates to claim 12, which claim 17 depends from. Appellants
do not dispute the merits of Examiner’s modification of Cecchi ’563 as it
relates to the rejection of claim 17, other than “Foster only teaches the use of
letters or numbers to label areas of its dish, and does not provide any
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Appeal 2015-006586
Application 12/592,630
teachings that deal with the shortcomings of Cecchi ’563” (Br. 9). Thus,
Appellants fail to establish error in Examiner’s prima facie case as it relates
to the rejection of claim 17.
SUMMARY
In summary, we affirm the rejection of claims 12 and 15 under 35
U.S.C. § 102(a) as being anticipated by Cecchi ’563.
We affirm the rejection of claims 2, 8, 10, and 13 under 35 U.S.C.
§ 103(a) as obvious over Cecchi ’563 and Cecchi ’411.
We affirm the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Cecchi ’563 and Gordon
We affirm the rejection of claim 17 under 35 U.S.C. § 103(a) as
obvious over Cecchi ’563 and Foster.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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